Document Type


Publication Date

January 1999


In recent years, U.S. courts have recognized that a wide (and potentially limitless) range of subject matter may act as a trademark. These developments arguably comport both with a contemporary (global) consumer who is less reliant on linguistic forms of communication and with postmodern scholarship regarding the varied sources and development of meaning. This article addresses how trademark law should adapt to the reality that consumers identify and distinguish products using a range of symbols other than the traditional forms of words and pictorial images. I contend that, in order to regulate effectively the present-day marketplace, trademark law must recognize the limitless sources of meaning. But while nontraditional subject-matter may equally identify a product?s source, protecting that nontraditional matter as a trademark may give rise to very different consequences than protecting traditional trademark subject-matter such as words. If ontological restrictions upon trademark subject-matter are removed, a new set of limits must prudently be established if trademark protection is not to spawn adverse competitive effects from overprotection. I suggest that such limits can be found by tethering trademark law directly to its limited purposes, and by grounding protection not in over-generalized assumptions about classes of subject matter, but rather in the real present-day impact of particular symbols in society. The Article explores this (teleological model) through the vehicle of the nontraditional subject-matter generating the most trademark litigation and the most critical thinking, namely, product design features. The article systematizes the growing body of trade dress case law and scholarship and highlights the different premises that I detect underlying divergent schools of thought. I argue that the Supreme Court is cautiously moving, albeit without any express recognition, toward a postmodern vision of marketplace symbols, and that its recent opinions represent an incipient version of the teleological model that I espouse. Finally, I exemplify the operation of the teleological model by applying its lessons to the issue of functionality. Applying the teleological model to various hotly-debated aspects of the functionality doctrine leads me to endorse adoption of a transparent, purposive analysis of "competitive need" as the measure of functionality rather than any single doctrinal formulation. That inquiry, I argue, should be particularized and applied without categorical differentiation between aesthetic and utilitarian features. I also reject the prevailing view that a finding of functionality should foreclose the grant of any relief to a plaintiff producer, finding it insufficiently cognizant of the costs of confusingly similar source-identifying designs in an increasingly visual society. Instead, I propose that courts should explore the possibility of conditioning a defendant's right to copy a functional design on compliance with labeling or other requirements that minimize consumer confusion. Moderating the consequence for plaintiffs of a finding of functionality should embolden courts to apply a rigorous functionality analysis to a greater range of design features. An ontologically unlimited approach to trademark subject-matter sits well with our postmodern condition; but, in order to avoid over-protection, it must be accompanied by a heightened regard for the policy concerns embodied in the functionality doctrine.

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